Appeal No. 97-0331
Application 08/359,562
the hand overlies the left-hand portion of the paddle and the
right-hand portion of the paddle overlies the forearm. When used
in such a manner, it is also readily apparent that the right-hand
end of the paddle would bear against the user’s forearm near the
elbow when the user’s wrist is flexed upwardly. While of course
there is no teaching in Malm of using the paddle in this manner,
it is well settled that if a prior art device inherently
possesses the capability of functioning in the manner claimed,
anticipation exists regardless of whether there was a recognition
that it could be used to perform the claimed function. See,
e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431-
32 (Fed. Cir. 1997). See also LaBounty Mfg. v. Int’l Trade
Comm’n, 958 F.2d 1066, 1075, 22 USPQ2d 1025, 1032 (Fed. Cir.
1992) (in quoting with approval from Dwight & Lloyd Sintering Co.
v. Greenawalt, 27 F.2d 823, 828 (2d Cir. 1928)):
The use for which the [anticipatory] apparatus was
intended is irrelevant, if it could be employed without
change for the purposes of the patent; the statute
authorizes the patenting of machines, not of their
uses. So far as we can see, the disclosed apparatus
could be used for "sintering" without any change
whatever, except to reverse the fans, a matter of
operation.
Here, the question of whether Malm’s paddle actually is or might
be used in the above-noted manner, merely depends upon the
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